UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3) [2023] FCA 1079

UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3) [2023] FCA 1079

Because UbiPark and Mr Howell succeeded on the infringement and Australian Consumer Law claims, UbiPark was largely successful on the unjustified threats claim against TMA Capital, and TMA Capital succeeded on the revocation claim, costs should follow those events: UbiPark must pay TMA Capital's costs of the revocation claim, while the TMA parties must pay UbiPark's and Mr Howell's costs of the balance of the proceeding, including reserved costs. The declaration should use the statutory language "unjustifiable" and cover threats against UbiPark and its customers, while the injunction should be confined to the UbiPark technology configuration that was the subject of the non-infringement...

Jurisdiction
Australia
Judgment Date
12 September 2023
Procedural Posture
Patent Litigation; Practice and Procedure / Determination on the Papers of Form of Final Orders and Costs Following Reasons for Judgment Delivered on 2 August 2023
Outcome
Declaration and permanent injunction granted for unjustifiable threats; TMA parties' cross-claim dismissed; UbiPark's revocation claim dismissed; costs ordered according to issues; security to be returned subject to stay; matter to proceed to quantum phase case management; leave to appeal and cross-appeal granted.
Legal Topics
['patents' 'unjustified Threats of Patent Infringement Proceedings' 'costs' 'final Orders' 'injunctions' 'revocation' 'leave to Appeal' 'stay']
['intellectual Property' 'practice and Procedure'] ['patents' 'unjustified Threats of Patent Infringement Proceedings' 'costs' 'final Orders' 'injunctions' 'revocation' 'leave to Appeal' 'stay']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Patent Litigation; Practice and Procedure / Determination on the Papers of Form of Final Orders and Costs Following Reasons for Judgment Delivered on 2 August 2023

Legal Issues

  1. 1 ['Whether the declaration should state that the threats of patent infringement proceedings in respect of Australian Patent No. 2019213335 were unjustifiable and extend to threats against customers of UbiPark.' 'Whether the injunction restraining further threats should be confined to UbiPark technology configured to operate in the manner described in the August 2023 Reasons.' "How costs should be allocated between the revocation claim and the balance of the proceeding, including reserved costs and Mr Howell's separate costs." 'Whether costs should be determined on a lump sum basis by a Registrar.' 'Whether orders concerning return of security and a case management hearing for the quantum phase should be made, and whether any stay or leave to appeal should be granted.']

Ratio Decidendi

Because UbiPark and Mr Howell succeeded on the infringement and Australian Consumer Law claims, UbiPark was largely successful on the unjustified threats claim against TMA Capital, and TMA Capital succeeded on the revocation claim, costs should follow those events: UbiPark must pay TMA Capital's costs of the revocation claim, while the TMA parties must pay UbiPark's and Mr Howell's costs of the balance of the proceeding, including reserved costs. The declaration should use the statutory language "unjustifiable" and cover threats against UbiPark and its customers, while the injunction should be confined to the UbiPark technology configuration that was the subject of the non-infringement...

Court Disposition

Declaration and permanent injunction granted for unjustifiable threats; TMA parties' cross-claim dismissed; UbiPark's revocation claim dismissed; costs ordered according to issues; security to be returned subject to stay; matter to proceed to quantum phase case management; leave to appeal and cross-appeal granted.

Orders

  • ['Each of the threats of patent infringement proceedings made by TMA Capital against UbiPark, and against customers of UbiPark, in respect of Australian Patent No. 2019213335 was unjustifiable.' "TMA Capital be permanently restrained from making further threats of patent infringement proceedings in respect of the...